DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 21 November 2025, 17 December 2025 has been entered.
Claim Objections
Claims 1, 12, and 22 are objected to because of the following informalities:
Independent claims 1, 12, and 22 contain the limitations selecting a sum pool operation…“being not being a MAC operation” and selecting a convolution operation…”being not being the MAC operation”. In light of Fig. 13, and the specification [0194-0196], it appears that the selecting a sum pool should occur when the operation is not a MAC operation, and that the selecting a convolution operation should occur when the operation is a MAC operation. Claims 3-4, 8-11 inherit the same deficiency by reasons of dependence on claim 1. Claims 14-15, 9-21 inherit the same deficiency by reasons of dependence on claim 12. Claims 24-25 inherit the same deficiency by reasons of dependence on claim 22.
Independent claims 1, 12, and 22 contain the limitations “the replacement operation” and “the replacement neural network operation” which both appear to refer antecedently back to “a replacement neural network operation”. For better consistency of the claims, it is suggested that in all instances of “the replacement operation” be amended to “the replacement neural network operation” in the independent claims and the claims which depend on them. Claims 3-4, 8-11 inherit the same deficiency by reasons of dependence on claim 1. Claims 14-15, 9-21 inherit the same deficiency by reasons of dependence on claim 12. Claims 24-25 inherit the same deficiency by reasons of dependence on claim 22.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 12, 14-15, 19-22, 24-25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 12 recites the limitation "the first neural network operation" in line 13. Claims 14-15, 19-21 inherit the same deficiency by reasons of dependence on claim 12. There is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites the limitation "the first neural network operation" in line 12. Claims 24-25 inherit the same deficiency by reasons of dependence on claim 22. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 3-4, 8-12, 14-15, 19-22, 24, 25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Apparatus claims 12, 14-15, 19-21 will be discussed first, followed by method claims 1, 3-4, 8-11, and followed by method claims 22 and 24-25.
Regarding claim 12, under the Alice Framework Step 1 analysis, the claim falls within the four statutory categories of patentable subject matter: a machine.
Under the Alice Framework Step 2A Prong 1 analysis, claim 12 recites Mental Processes and/or Mathematical Concepts. The claim recites Evaluations, which is specifically identified as an exemplar in the Mental Processes grouping of abstract ideas, and/or Mathematical Calculations, which is specifically identified as an exemplar in the
Mathematical Concepts grouping of abstract ideas:
“determine a replacement neural network operation in place of the elementwise neural network operation responsive to the elementwise neural network operation being one or both of an elementwise-sum operation and an elementwise-max operation, wherein the determining further comprises:
selecting a max-pool operation as the replacement operation responsive to the first neural network operation being the elementwise-max operation;
selecting an average pool operation as the replacement operation responsive to the first neural network operation being the elementwise-sum operation and responsive to a following operation being an average pool operation;
selecting a sum pool operation as the replacement operation responsive to the first neural network operation being the elementwise-sum operation and responsive to the first neural network operation being not being a MAC operation; and
selecting a convolution operation as the replacement operation responsive to the first neural network operation being the elementwise-sum operation and responsive to the first neural network operation being not being the MAC operation;
shuffle either one or both of rows and columns of a first matrix included in the matrix and either one or both of rows and columns of a second matrix included in the matrix, and
perform the replacement neural network operation for the elementwise neural network operation based on the shuffled matrix.”
See specification [0189-0192] which describes determining a replacement neural network operation. See specification [0086], [0144] which describes elementwise-sum and [0128], [0129] which describes elementwise-max. Observing that one or both of an elementwise-sum operation ([0086], [0144]) and elementwise-max operation ([0128], [0129]) are included in the operation of a matrix. Observing that any one or any combination of any two or more of a max-pool operation ([0132], [0134], [0140], [0161]), an average pool operation ([0146-0148], [0173]), a sum pool operation ([0148], [0173], [0177]), and a convolution operation ([0180-0182], [0185]) are included in the operation of a matrix. See specification [0184], [0187-0189] which describes shuffling and [0015], [0026], [0125-0127], [0138], [0141-0142], [0151], [0171], [0188] which describes the replacement operation. See ([0125-0140], [0190-0191]) describing selecting a max-pool operation as the replacement operation responsive to the first neural network operation being the elementwise-max operation. See ([0141-0147], [0167-0176], [0192-0193]) describing selecting an average pool operation as the replacement operation responsive to the first neural network operation being the elementwise-sum operation and the following operation being an average pool. See ([0148-0154], [0167-0176], [0194, 0196]) describing selecting a sum pool operation as the replacement operation responsive to the first neural network operation being the elementwise-sum operation and the first neural network operation not being a MAC operation. See ([0178-0185], [0194, 0195]) describing selecting a convolution operation as the replacement operation responsive to the first neural network operation being the elementwise-sum operation and the first neural network operation being a MAC operation. See specification [0100-0101], [0136-0137], [0149-0150] which describes shuffling row-wise and column-wise. Shuffling elements [0184] and specifically rows/columns [0149-0150], given the number of matrices to be two (n=2) [0103], is within reason to perform this step in the mind or with aid of a pen and paper. For these reasons, the claim recites Mental Processes and/or Mathematical Concepts.
Under the Alice Framework Step 2A Prong 2 analysis, the claim recites the combination of the following additional elements: processors configured to execute instructions, a memory storing the instructions and configured to store a matrix on which an elementwise neural network operation is to be performed, wherein execution of the instructions configures the processors, the process of the memory to store a matrix on which an operation of a neural network is to be performed, transmitting one row or column of the rows or columns of the first matrix to an operator for the replacement neural network operation, and transmitting one row or column of the rows or columns of the second matrix to the operator, so as to be operated adjacent to the one row or column. All additional element limitations are examples that merely result in “apply it” on a computer (see MPEP 2106.05(f): Mere Instructions To Apply An Exception). A memory and a processor are recited at a high level of generality, and are examples of generic computing elements, and/or merely generally linked to a particular technological environment (see MPEP 2106.05(h)(vi): Limiting the abstract idea of collecting information, analyzing it, and displaying certain results of the collection analysis to data related to the electric power grid, because limiting application of the abstract idea to power-grid monitoring is simply an attempt to limit the use of the abstract idea to a particular technological environment). The process by the memory to store and transmitting limitation are examples of an insignificant extra-solution activity, mere data gathering. Taken alone or in combination, they fail to integrate the judicial exception into a practical application.
Under the Alice Framework Step 2B analysis, the additional elements recited above, take alone or in combination, do not amount to significantly more than the judicial exception. As discussed in the Step 2A Prong 2 analysis, the claim recites all the additional elements that merely result in “apply it” on a computer. A memory and a processor at a high level of generality. Further, these additional elements merely generally links the use of the abstract idea to a particular technological environment. The limitations described above as insignificant extra-solution activities are also well-understood, routine, or conventional (for the storing limitation: see MPEP 2106.05(d)(II): Storing and retrieving information in memory; for the transmitting limitations: see MPEP 2106.05(d)(II): Receiving or transmitting data over a network; storing and retrieving information in memory). Since the claim does not include additional elements that, alone or in combination, amount to significantly more than the judicial exception, claim 12 is ineligible.
Regarding claim 14, it is rejected for at least the reasons cited with respect to claim 12 as it merely limits further the Mental Processes and/or Mathematical Concepts.
Under the Alice Framework Step 2A Prong 2 analysis, the claim recites the combination of the following additional elements: the process of the processor to store one row or column of the rows or columns of the first matrix, the process of the processor to store another row or column of the rows or columns of the first matrix at a location a predetermined interval away from a location at which the one row or column is stored, and the process of the processor to store one row or column of the rows or columns of the second matrix between the location at which the one row or column is stored and the location at which the other row or column is stored. All additional element limitations are examples that merely result in “apply it” on a computer (see MPEP 2106.05(f): Mere Instructions To Apply An Exception). The process by the processor to store limitations are examples of an insignificant extra-solution activity, mere data gathering. Taken alone or in combination, they fail to integrate the judicial exception into a practical application.
Under the Alice Framework Step 2B analysis, the additional elements recited above, take alone or in combination, do not amount to significantly more than the judicial exception. The limitations described in the Step 2A Prong 2 analysis as insignificant extra-solution activity are also well-understood, routine, or conventional (see MPEP 2106.05(d)(II): Storing and retrieving information in memory; performing repetitive calculations). These additional elements merely recite generic components that result in “apply it” on a computer. Since the claim does not include additional elements that, alone or in combination, amount to significantly more than the judicial exception, claim 14 is ineligible.
Regarding claim 15, it is rejected for at least the reasons cited with respect to claim 14 as it merely limits further the Mental Processes and/or Mathematical Concepts.
Under the Alice Framework Step 2A Prong 1 analysis, claim 15 recites Mental Processes and/or Mathematical Concepts. The claim recites Evaluations, which is specifically identified as an exemplar in the Mental Processes grouping of abstract ideas, and/or Mathematical Calculations, which is specifically identified as an exemplar in the
Mathematical Concepts grouping of abstract ideas:
“wherein the predetermined interval is determined based on a number of matrices on which the elementwise operation is to be performed.”
See specification [0103], [0114], [0162], [0174], [0186] which describes determining the predetermined interval. Determining the predetermined interval [0102], [0114] given the number of matrices to be two (n=2) [0103], is within reason to perform this step in the mind or with aid of a pen and paper. For these reasons, the claim recites Mental Processes and/or Mathematical Concepts.
Claim 15 contains no further additional elements that would require further consideration under Step 2A Prong 2 and Step 2B. Since the claim does not include additional elements that, alone or in combination, amount to significantly more than the judicial exception, claim 15 is ineligible.
Regarding claim 19, it is rejected for at least the reasons cited with respect to claim 12 as it merely limits further the Mental Processes and/or Mathematical Concepts.
Under the Alice Framework Step 2A Prong 1 analysis, claim 19 recites Mental Processes and/or Mathematical Concepts. The claim recites Evaluations, which is specifically identified as an exemplar in the Mental Processes grouping of abstract ideas, and/or Mathematical Calculations, which is specifically identified as an exemplar in the
Mathematical Concepts grouping of abstract ideas:
“merge the replacement operation with a subsequent neural network operation when the subsequent neural network operation is to be performed after the elementwise neural network operation.”
See specification [0016], [0082], [0127], [0158], [0168], [0176], [0184-0185] which describes merging. Merging the replacement operation with a subsequent neural network operation ([0155], [0158], [0168], [0184-0185]), given the number of matrices to be two (n=2) [0103], it is within reason to perform this step in the mind or with aid of a pen and paper. For these reasons, the claim recites Mental Processes and/or Mathematical Concepts.
Claim 19 contains no further additional elements that would require further consideration under Step 2A Prong 2 and Step 2B. Since the claim does not include additional elements that, alone or in combination, amount to significantly more than the judicial exception, claim 19 is ineligible.
Regarding claim 20, it is rejected for at least the reasons cited with respect to claim 19 as it merely limits further the Mental Processes and/or Mathematical Concepts.
Under the Alice Framework Step 2A Prong 1 analysis, claim 20 recites Mental Processes and/or Mathematical Concepts. The claim recites Evaluations, which is specifically identified as an exemplar in the Mental Processes grouping of abstract ideas, and/or Mathematical Calculations, which is specifically identified as an exemplar in the
Mathematical Concepts grouping of abstract ideas:
“determine whether the replacement neural network operation and the subsequent neural network operation are mergeable, and
merge the replacement neural network operation with the subsequent neural network operation responsive to determining that the replacement neural network operation and the subsequent neural network operation are mergeable.”
See specification [0083], [0159], [0169-0170], [0204] which describes determining and [0017-0018], [0028], [0083], [0204] which describes merging. Merging the replacement operation with the subsequent neural network operation ([0155], [0158], [0168], [0184-0185]) given a determination result ([0083], [0204]) and the number of matrices to be two (n=2) [0103], it is within reason to perform this step in the mind or with aid of a pen and paper. For these reasons, the claim recites Mental Processes and/or Mathematical Concepts.
Claim 20 contains no further additional elements that would require further consideration under Step 2A Prong 2 and Step 2B. Since the claim does not include additional elements that, alone or in combination, amount to significantly more than the judicial exception, claim 20 is ineligible.
Regarding claim 21, it is rejected for at least the reasons cited with respect to claim 20 as it merely limits further the Mental Processes and/or Mathematical Concepts.
Under the Alice Framework Step 2A Prong 1 analysis, claim 21 recites Mental Processes and/or Mathematical Concepts. The claim recites Evaluations, which is specifically identified as an exemplar in the Mental Processes grouping of abstract ideas, and/or Mathematical Calculations, which is specifically identified as an exemplar in the
Mathematical Concepts grouping of abstract ideas:
“merge the replacement neural network operation with the subsequent neural network operation by adjusting a kernel size of the subsequent neural network operation and a stride size of the subsequent neural network operation based on a number of rows or columns of the matrix.”
See specification [0018], [0084], [0140], [0154], [0161-0162], [0175], [0184-0185] which describes merging by adjusting a kernel size and a stride size. Merging the replacement operation with the subsequent neural network operation ([0155], [0158], [0168], [0184-0185]) given adjusting a kernel size ([0084], [0133], [0140], [0146], [0160-0161], [0163], [0172-0173]), a stride size ([0084], [0140], [0160-0161], [0163], [0172-0173]), and the number of matrices to be two (n=2) [0103], it is within reason to perform this step in the mind or with aid of a pen and paper. For these reasons, the claim recites Mental Processes and/or Mathematical Concepts.
Claim 21 contains no further additional elements that would require further consideration under Step 2A Prong 2 and Step 2B. Since the claim does not include additional elements that, alone or in combination, amount to significantly more than the judicial exception, claim 21 is ineligible.
Claims 1, 3-4, 8-10 are directed to a method that would be practiced by the device of claims 12, 14-15, 19-21. All steps recited in claims 1, 3-4, 8-10 are practiced by the device of claims 12, 14-15, 19-21 as configured, respectively. The claims 12, 14-15, 19-21 analysis equally applies to claims 1, 3-4, 8-10.
Additionally, the analysis of the similar limitations recited from claim 12 are incorporated, and claim 1 recites the following: wherein the replacement operation is a different operation than the first operation.
Under the Alice Framework Step 2A Prong 1 analysis, claim 1 recites Mental Processes and/or Mathematical Concepts. The claim recites Evaluations, which is specifically identified as an exemplar in the Mental Processes grouping of abstract ideas, and/or Mathematical Calculations, which is specifically identified as an exemplar in the
Mathematical Concepts grouping of abstract ideas:
“wherein the replacement operation is a different operation than the first neural network operation.”
See specification [0083], [0159], [0169-0170] which describes the replacement operation as a different operation. To determine if two operations, as indicated in [0159], [0169-0170], are the same or not is within reason to perform this step in the mind or with aid of a pen and paper. For these reasons, the claim recites Mental Processes and/or Mathematical Concepts.
Claim 1 contains no new, further additional elements that would require
consideration under Step 2A Prong 2 and Step 2B. Since the claim does not include
additional elements that, alone or in combination, amount to significantly more than
the judicial exception, claim 1 is ineligible.
Regarding claim 11, it is rejected for at least the reasons cited with respect to claim 1. Under the Alice Framework Step 1 analysis, the claim falls within the four statutory categories of patentable subject matter: a computer program product.
Claim 11 makes an assertion of configuring the processors to be configured to perform the method of claim 1 via the non-transitory computer-readable storage medium. These additional elements are examples that merely result in “apply it” on a computer (see MPEP 2106.05(f): Mere Instructions To Apply An Exception). Reciting the non-transitory computer-readable storage medium merely changes the statutory category, but does not ultimately alter the conclusion that the claim does not include additional elements that, alone or in combination, amount to significantly more than the judicial exception. Therefore, claim 11 is ineligible.
Claims 22, 24, 25 are directed to a method that would be performed by the apparatus claims 12, 15, 21, respectively. The claims 12, 15, 21 analysis equally applies to claims 22, 24, 25, and are similarly rejected.
Additionally, the analysis of the similar limitations recited from claim 12 are incorporated, and claim 22 recites the following: the replacement neural network operation comprising applying a kernel and a stride size to matrix data of the first memory to generate a final output matrix for the neural network.
Under the Alice Framework Step 2A Prong 1 analysis, claim 22 recites Mental Processes and/or Mathematical Concepts. The claim recites Evaluations, which is specifically identified as an exemplar in the Mental Processes grouping of abstract ideas, and/or Mathematical Calculations, which is specifically identified as an exemplar in the
Mathematical Concepts grouping of abstract ideas:
“the replacement neural network operation comprising applying a kernel and a stride size to matrix data to generate a final output matrix.”
See specification [0158], [0160-0164], [0172-0177] which describes the replacement operation comprising applying a kernel and a stride size to generate a final output matrix, which is within reason to perform this step in the mind or with aid of a pen and paper given a number of matrices may be 3 ([0162]). For these reasons, the claim recites Mental Processes and/or Mathematical Concepts.
Under the Alice Framework Step 2A Prong 2 analysis, the claim recites the combination of the following additional elements: a first memory, storing respective columns of the first matrix and the second matrix in a first memory; storing first columns from the first matrix spaced apart in the first memory by a predetermined interval; and storing respective second columns from the second matrix in the first memory between respect ones of the first columns. A first memory is recited at a high level of generality, and is an example of generic computing elements that result in “apply it” on a computer, and/or merely generally linked to a particular technological environment (see MPEP 2106.05(h)(vi): Limiting the abstract idea of collecting information, analyzing it, and displaying certain results of the collection analysis to data related to the electric power grid, because limiting application of the abstract idea to power-grid monitoring is simply an attempt to limit the use of the abstract idea to a particular technological environment). The storing limitations are examples of an insignificant extra-solution activity, mere data gathering. Taken alone or in combination, they fail to integrate the judicial exception into a practical application.
Under the Alice Framework Step 2B analysis, the additional elements recited above, take alone or in combination, do not amount to significantly more than the judicial exception. As discussed in the Step 2A Prong 2 analysis, the claim recites all the additional elements that merely result in “apply it” on a computer. A first memory is recited at a high level of generality and/or merely generally links the use of the abstract idea to a particular technological environment. The limitations described above as insignificant extra-solution activities are also well-understood, routine, or conventional (See Patterson, David A., and John L. Hennessy. Computer Organization and Design: The Hardware/Software Interface (5th Edition). Morgan Kaufmann, 2013. (hereinafter “Patterson”), Pg. 413, Software Optimization via Blocking, Para. 2-3; Pg. 414, Para. 4-5; Pg. 415, Fig. 5.21 illustrates reading the stored submatrices and Fig. 5.22 illustrates the access using blocking). Since the claim does not include additional elements that, alone or in combination, amount to significantly more than the judicial exception, claim 22 is ineligible.
Allowable Subject Matter
Any indication of allowability is being withheld pending the manner in which Applicant amends the claims to overcome the 35 U.S.C. 101 and 35 U.S.C. 112(b) rejections, and the claim objections.
Response to Arguments
35 USC 112(b). The rejections are withdrawn based on the amendment to the claims.
35 USC 101. The Applicant’s arguments are in detail as follows:
1) Step 2A Applicant asserts that, Examiners are being reminded that mental process and mathematical concept rejections cannot be maintained merely because mathematical concepts are not "mathematical relationships, calculations, formulas, or equations using words or mathematical symbols."
Accordingly, reconsideration of the Office's finding of the claims as being abstract under the misapplied standards for mental processes and mathematical concepts is requested. (Remarks Pg. 14).
Examiner respectfully disagrees. The claims recite abstract ideas, with those particular limitations analyzed in the 35 USC 101 rejections falling into the Mental Processes and Mathematical Concepts groupings.
Claims can recite a mental process even if they are claimed as being performed on a computer. Considering the broadest reasonable interpretation of the claims in light of the specification, the examiner has determined the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process. See MPEP 2106.04(a)(2)(III)(C).
2) Step 2B Applicant asserts that, aside from the claims not being applicable as "apply it" (i.e., using a computer to perform an abstract idea), the claims clearly provide example technological solutions to a technical problem, such as the problem that performing an elementwise-sum operation using MAC operators required a separate weight, and the operation state of a portion of the MAC operators had to be controllable. Instead, the present claims may, for example, improve the operational speed of neural networks by replacing operations to perform operations without requiring a weight. See e.g., the Application at Paragraphs [0005-0007] (Remarks Pg. 14).
Here, the claims recite performing a replacement operation based on the shuffled matrix which provides details on how the neural network would solves the technological problem where a elementwise operation is replaced by a pooling operations that do not require weights, reducing memory usage. This advancement reduces operation cycles and increases operator utilization (Remarks Pg. 15).
Examiner respectfully disagrees. It appears that the purported improvements are derived from the abstract idea, the manner of applying the determining the replacement neural network operation and shuffling the rows and columns of the matrices. Merging neural network operations merely simplifies how many operations are to be performed by making a determination of mergeability ([0158-0159]). Shuffling elements merely reorganizes the rows and columns of the matrices ([0187], [0189-0191]). Accordingly, both the determining and merging limitations have been analyzed as part of the abstract idea, Mental Processes and/or Mathematical Concepts.
With respect to the “elementwise-sum operation is replaced by a pooling operations that do not require weights, reducing memory usage. This advancement reduces operation cycles and increases operator utilization”, it is the manner of applying the abstract idea, the Mental Processes and/or Mathematical Concepts, from which the purported improvements are derived. See ([0082-0083, 0086-0087]) in the specification.
It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception. See MPEP § 2106.04(d) (discussing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303-04, 125 USPQ2d 1282, 1285-87 (Fed. Cir. 2018)).
The additional elements recited in claim 1 are analyzed recited at a high level of generality, result in merely “apply it”, merely generally linked to a particular technological environment, and/or examples of an insignificant extra-solution activity. The courts have also identified limitations that did not integrate a judicial exception into a practical application: Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f); Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h). See MPEP 2106.04(d)(I).
3) Step 2B Applicant asserts that, in Enfish, the court held that the following claim directed to a self-referential table was not abstract and, as discussed below, provided an improvement in the art (Remarks Pg. 15).
This claim is analogous to the current claims such as a process including "shuffle either one or both of rows and columns of a first matrix included in the matrix and either one or both of rows and columns of a second matrix included in the matrix," "transmitting one row or column of the rows or columns of the first matrix to an operator for the replacement neural network operation," and "transmitting one row or column of the rows or columns of the second matrix to the operator, so as to be operated adjacent to the one row or column," as recited in claim 12. That is, the present claims may be considered, at a high level, as a specific way to improve the way a computer stores and processes data as a solution to a problem found in typical neural networks as discussed above (Remarks Pg. 16).
In addition, Enfish held that "specific asserted improvement in computer capabilities "the use of programmable operational characteristics that are configurable based on the type of processor-instead of "on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool." Enfish, 822 F.3d at 1336. That is, the claims in Enfish including "a plurality of logical rows," "a plurality of logical columns," and "means for indexing data stored in said table," were not merely invoking computers as a tool but provided "specific asserted improvement in computer capabilities". Similarly, claim 12, for example, recites a processor implemented method that improves the "the functioning of a computer or any other technology/technical field," by making a neural network perform operations more efficiently by arranging the input data into an improved form for computation/processing of the processor (Remarks Pg. 17).
Examiner respectfully disagrees. The case cited Enfish LLC v. Microsoft Corp. et al., 822 F3d 1327 (Fed.Cir. 2016) is not equivalent or similar to the instant application. Even if considered, such case recites different additional elements and possesses claim interpretations under 35 USC 112(f) or pre-AIA 35 USC 112, sixth paragraph, of which was factored into the court’s decision (see MPEP 2106(II)), that is unlike those recited in the instant application.
4) Step 2B Applicant asserts that, Enfish is important in understanding how claims may improve the functioning of a technology area. Furthermore, the USPTO Director wrote that Enfish is a leading case in the area of Section 101. Therefore, the Applicant requests reconsideration of the Office's Section 101 analysis in view of the USPTO Director's additional comments.
Furthermore, the claims are not mere "apply it" conditions under Step 2B as the claims clearly define more than a judicial exception. That is, claim 1 imposes a meaningful limit on the claimed features cited by the Office, such that the claim 1 is more than a drafting effort designed to monopolize the claimed features cited by the Office (Remarks Pg. 18).
Here, the claims cover a particular solution or way to achieve a desired outcome and improve computer capabilities and/or improve an existing technology (Remarks Pg. 19).
Examiner respectfully disagrees. The claims invoke computers merely as a tool. "Claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). See MPEP 2106.05(f)(2).
In Enfish, the court evaluated the patent eligibility of claims related to a self-referential database. Id. The court concluded the claims were not directed to an abstract idea, but rather an improvement to computer functionality. Id. It was the specification’s discussion of the prior art and how the invention improved the way the computer stores and retrieves data in memory in combination with the specific data structure recited in the claims that demonstrated eligibility. 822 F.3d at 1339, 118 USPQ2d at 1691. The claim was not simply the addition of general purpose computers added post-hoc to an abstract idea, but a specific implementation of a solution to a problem in the software arts. 822 F.3d at 1339, 118 USPQ2d at 1691. See MPEP 2106.05(a)(I).
35 USC 103. Applicant’s arguments, see Remarks Pg. 20-21, filed 11/21/2025, with respect to 35 USC 103 have been fully considered and are persuasive. The 35 USC 103 rejections of claims 1, 3-4, 8-12, 14-15, 19-22 and 24-25 has been withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARKUS A VILLANUEVA whose telephone number is (703)756-1603. The examiner can normally be reached M - F 8:30 am - 5:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Trujillo can be reached at (571) 272-3677. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARKUS ANTHONY VILLANUEVA/Examiner, Art Unit 2151
/James Trujillo/Supervisory Patent Examiner, Art Unit 2151